Thursday, December 19, 2019

Divided TTAB Panel Finds "19 CRIMES" Merely Descriptive of Videos and Entertainment Services

A divided TTAB panel affirmed a Section 2(e)(1) refusal of the mark 19 CRIMES, finding it merely descriptive of video and audio works and production, distribution, and rental of recorded entertainment. The panel majority agreed with Examining Attorney Tracy Fletcher that the mark "immediately tells consumers about a feature of [the] goods and services, namely, that the information and entertainment provided relates to the 19 crimes of 18th and 19th Century Britain that led to involuntary colonization in Australia." In re Southcorp Brands Pty Limited, Serial No. 88310184 (December 17, 2019) [not precedential] (Opinion by Judge Peter W. Cataldo; dissenting opinion by Judge Jonathan Hudis).

Applicant argued that the term 19 CRIMES falls on the suggestive side of the descriptiveness/suggestiveness divide because it does not immediately convey any information about applicant's goods and services. The term 19 CRIMES refers to the crimes that resulted in exile to Australia. Although the subject matter of one or more of applicant's films may be related to this time in history, the subject matter of applicant's intended products and services is the unique stories of several "incorrigible rogues" who were exiled or transported upon being convicted of one of those crimes.

The Board pointed out that the mark at issue must be considered not in a vacuum, but in the context of the identified goods and services. Applicant's identification of goods and services is broadly worded, and encompasses works on the subject of the nineteen crimes that resulted in a sentence of transportation to Australia. Therefore the mark 19 CRIMES is merely descriptive of the goods and services.

Applicant argued that, since its goods and services will relate to the individuals transported to Australia, the mark is suggestive because it does not immediately or directly describe any feature, characteristic, or quality of those goods and services. Imagination, thought, or perception is required to make any connection. The Board disagreed, but in any case observed that applicant's mark "merely describe[s] the nineteen crimes themselves under the broadly stated subject matter of Applicant's goods and services."

Therefore the panel affirmed the refusal.

Judge Hudis, in dissent, opined that the majority misapplied the law, considered inadmissible evidence, and relied on a theory not advanced by the examining attorney during briefing.

In his view, the majority's opinion was "grounded upon subjective abstractions and guesswork (that is, what applicant's goods and services could 'encompass'"). Moreover "only a small sliver of the relevant purchasing public 'might' have some idea (if any) of the content of Applicant's Class 9 and 41 Goods and Services based on the 19 CRIMES mark - university educated individuals with a major or concentration in 19th Century British history." In short, the mark does not immediately inform the consumer about the content of applicant's goods and services.

Finally, Judge Hudis found it unfair that the majority relied, in his view, on a theory (namely, that the mark is merely descriptive, generally, as to the recited goods and services) to which applicant did not have an opportunity to respond.

Judge Hudis found this to be, at best, a close case, and therefore the mark should have been found to be suggestive and should have been published for potential opposition, since any doubt as to registrability as to descriptiveness should be resolved in favor of the applicant.

Read comments and post your comment here.

TTABlog comment: Which side are you on? Do you expect an appeal of this one?

Text Copyright John L. Welch 2019.


At 7:53 AM, Anonymous Anonymous said...

Scathing dissent by Hudis. Is this his first decision?

At 12:18 PM, Anonymous meh said...

I have not read the entire record so I don't have an opinion about the merits of Hudis' comments applied to this case. But I'm glad he raised the larger issue of "fairness" to applicants in terms of giving them notice about what rationale is being advanced by the examining attorney to support the refusal. As practitioners know, those rationales can and do shift, sometimes subtly and sometimes dramatically. And the Board has on occasion gone out of its way to cite TMBP Section 1217 for the proposition that "The Board need not find that the examining attorney’s rationale was correct in order to affirm the refusal to register, but rather may rely on a different rationale."

I believe the Board's position is clearly wrong and violates the Administrative Procedure Act. APA concepts have been more fully explored on the patent side, but the same reasoning should apply equally to the trademark side. "The APA requires the PTO 'to provide prior notice . . . of all matters of fact and law asserted prior to an appeal hearing before the [PTAB]'" and this "framework 'limits the [PTAB's] ability to rely on different grounds than the examiner.'" Honeywell Int’l Inc. v. Mexichem Amanco Holding S.A. de C.V., 123 U.S.P.Q.2d 1605, 1611 (Fed. Cir. 2017) (citation omitted). The "ultimate criterion" is "whether applicants have had fair opportunity to react to the thrust of the rejection." Id. (citation and quotation marks omitted). The Board issues a new ground for rejection when it "relies on new facts and rationales not previously raised to the applicant by the examiner." Id.

Accordingly, in Honeywell the Federal Circuit found the PTAB had issued a new ground for rejection because "the [PTAB] expressly disagreed with the Examiner's reasons and instead stated reasons of its own." Id. at 1612. Furthermore, the APA-mandated notice "does not focus on the applicant's arguments divorced from the examiner's rejections of record that are actually appealed to the [PTAB]. Instead, it focuses on the 'adverse decisions of examiners' during prosecution which form the basis of the Board's scope of review." Id. [That quote is from a decision citing 35 USC 6(b), but trademark-specific 15 USC 1070 uses essentially the same wording.] And in another patent case, In re Stepan Co., 100 U.S.P.Q.2d 1489 (Fed. Cir. 2011), the court parenthetically described the holding in one of its precedents as "noting there was no new ground of rejection when the [PTAB] used the same basis *and the same reasoning* advanced by the examiner." ("and the same reasoning" was italicized by the court).

The Board's position that it "may rely on a different rationale" than that advanced by the examining attorney is inconsistent with the APA. It also seems obvious, in that the Board is essentially claiming the power to tell an applicant its application is refused for a reason the applicant never had a chance to address.

At 12:56 PM, Blogger Bob Cumbow said...

Very bad precedent. Almost every title of a series of books, movies, or television shows is somewhat descriptive of its content, including every series whose title is the name of a character featured in the series or the name of a location where the series takes place. Following this decision could deprive about 90% of all series titles of the benefits of trademark registration.

At 3:08 PM, Blogger Gene Bolmarcich, Esq. said...

A great dissent that should have been the holding. Why is it OK for the USPTO to use extrinsic evidence to prove descriptiveness? At what point in the purchasing process does the test for descriptiveness kick in? NO title is descriptive when it appears on a DVD with no description of the content. Is it always going to be simply presumed that the full description of the content will be on the DVD packaging? Can't an applicant avoid the problem by saying that the DVDs are blank? (in which case the mark cannot be descriptive) many few good answers from the existing precedent and TMEP.


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